Ex Parte Vries et al

Board of Patent Appeals and Interferences

Jul 23, 2008

10500502 (B.P.A.I. Jul. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANCISCUS LEONARDUS GERARDUS VRIES,
and ANTONIE HUBERT MARIE KEES (DECEASED)
__________

Appeal 2008-1608
Application 10/500,502
Technology Center 1700
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Decided: July 23, 2008
___________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 1-6, all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
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Application 10/500,502

The Examiner finally rejected claims 1-6 under 35 U.S.C. § 102(a) or
(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Scott et al.1,2 Final 2.3
The Examiner finally rejected claims 1-6 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Tiedt et al.4 and Scott. Final 2.
B. ISSUES
Whether the Appellants have shown that the Examiner reversibly
erred in rejecting claims 1-6 under 35 U.S.C. § 102(e) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over Scott.
Whether the Appellants have shown that the Examiner reversibly
erred in rejecting claims 1-6 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Tiedt and Scott.
C. Subject matter on appeal
The subject matter on appeal is directed to a sintered body of gastight
polycrystalline aluminum oxide containing magnesium in oxidic form
(MgO) and a second metal M in oxidic form (M2O3). Spec. 1:1-2. The
sintered alumina body may be used in a lamp vessel of a high-pressure
discharge lamp. Spec. 1:17-19, 4:13-15.
Claim 1 is representative of the subject matter on appeal:
1. A sintered body of gastight polycrystalline aluminum
oxide containing magnesium in oxidic form and a second metal

1 US 6,639,362 B1 issued to Scott et al. on October 28, 2003 (“Scott”).
2 Although the Appellants have not challenged the status of Scott as prior art
under 35 U.S.C. § 102(a), it does not appear that Scott is available as prior
art under §102(a) because Scott was patented in this country after the
December 18, 2002, filing date of the Appellants’ PCT/IB02/05618.
Nevertheless, Scott is available as prior art under 35 U.S.C. § 102(e).
3 Final Office Action mailed October 16, 2006.
4 US 5,625,256 issued to Tiedt et al. on April 29, 1997 (“Tiedt”).
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M in oxidic form, characterized in that the second metal M is
selected from erbium, holmium, dysprosium and thulium, and
the aluminum oxide further comprises zirconium in oxidic
form, magnesium calculated as MgO being present in a quantity
by weight of 50 to 1000 ppm, the second metal calculated as
M2O3 being present in a quantity by weight of 10 to 100 ppm,
and zirconium calculated as ZrO2 being present in a quantity by
weight of 50 to 600 ppm.

D. PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727
(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
Facts relevant to a determination of obviousness include (1) the scope
and content of the prior art, (2) any differences between the claimed
invention and the prior art, (3) the level of skill in the art, and (4) any
relevant objective evidence of obviousness or non-obviousness. KSR, 127 S.
Ct. at 1734, Graham, 383 U.S. at 17-18.
A person of ordinary skill is also a person of ordinary creativity, not
an automaton. KSR, 127 S. Ct. at 1742. One of ordinary skill in the art is
presumed to have skills apart from what the prior art references expressly
disclose. See In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
A rejection premised upon a proper combination of references cannot
be overcome by attacking the references individually. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
The question under 35 U.S.C. § 103 is not merely what the references
teach but what they would have suggested to one of ordinary skill in the art
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at the time the invention was made. All disclosures of the prior art must be
considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
It is well-settled that where the difference between the claimed
invention and the prior art is an overlapping range, the Appellants must
show that the particular range is critical by evidence of unexpected results.
In re Wertheim, 541 F.2d 257, 267 (CCPA 1976); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990).
In order for a showing of “unexpected results” to be probative
evidence of non-obviousness, it falls upon the applicant to at least establish:
(1) that there actually is a difference between the results obtained through
the claimed invention and those of the prior art; and (2) that the difference
actually obtained would not have been expected by one skilled in the art at
the time of invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
E. ANALYSIS
1. Scott
The Examiner found that Scott discloses a sintered polycrystalline
body to be used in high intensity discharge lamps comprising alumina with
dopants that include MgO in an amount of 50-1500 ppm, ZrO2 in an amount
of 0-700 ppm, and Dy2O3 in an amount of 0-1000 ppm.5 The Examiner
found that Scott discloses that the sintered alumina body preferably includes
at least 100 ppm ZrO2. Ans. 36; Scott 4:29-43.
In view of the substantial overlap of the ranges disclosed in Scott and
the ranges claimed by the Appellants, the Examiner found that Scott

5 At least 5 ppm of Dy2O3 is present in the alumina when Dy2O3 is included
as a dopant. Scott 4:29-41.
6 Examiner’s Answer mailed June 13, 2007.
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anticipates the claimed subject matter or, in the alternative, concluded that
Scott renders obvious the claimed subject matter. Ans. 3.
The Appellants argue that Scott does not anticipate or render obvious
the claimed subject matter for several reasons. First, the Appellants argue
that claim 1 limits the amount of MgO to 1000 ppm whereas Scott discloses
that the amount of MgO may be as high as 1500 ppm. The Appellants also
argue that claim 1 requires ZrO2 whereas Scott discloses that ZrO2 is
optional. App. Br. 5-6.7
Scott discloses that the alumina comprises 50-1500 ppm of MgO.
Scott 4:29-41. Scott discloses that alumina powder may be doped with
magnesia (MgO) in an amount preferably equal to 0.05% by weight of the
alumina, i.e., 500 ppm, to inhibit grain growth. Scott 4:12-14. Scott also
discloses that the alumina includes 0-700 ppm of ZrO2 and preferably
includes at least 100 ppm ZrO2. Scott 4:42-43.
We find that these teachings in Scott would lead one of ordinary skill
in the art toward the claimed amounts of MgO and ZrO2 with sufficient
specificity to anticipate the claimed subject matter. Contra Atofina v. Great
Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (given the
considerable difference between the claimed temperature range and the
range in the prior art, no reasonable fact finder could conclude that the prior
art describes the claimed range with sufficient specificity to anticipate this
claim limitation). That being said, the §103 rejection is dispositive.
The Appellants do not point to any error in the Examiner’s findings
that the ranges of MgO and ZrO2 disclosed in Scott and claimed by the
Appellants substantially overlap. Thus, the Appellants must show that the

7 Appeal Brief dated March 5, 2007.
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claimed ranges are critical by evidence of unexpected results. Wertheim,
541 F.2d at 267; Woodruff, 919 F.2d at 1578.
Referring to page 2, lines 28-30 of the Specification, the Appellants
argue that the claimed upper limit of MgO (1000 ppm) is critical since
undesirable spinel formation occurs above 1000 ppm. App. Br. 6. Referring
to page 2, lines 7-13 of the Specification, the Appellants also argue that the
amount of ZrO2 is critical because too much ZrO2 adversely affects light
efficiency and the mechanical strength of the lamp vessel. App. Br. 8.
The portions of the Specification relied on by the Appellants do not
associate any amounts of MgO and ZrO2 with these effects. Moreover, the
Appellants have failed to direct us to any credible evidence establishing that
the effects of MgO and ZrO2 disclosed in the Specification would have been
unexpected. Freeman, 474 F.2d at 1324; Rohm and Haas Co. v. Brotech
Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the rules or in
jurisprudence requires the fact finder to credit unsupported or conclusory
assertions). Thus, the Appellants have failed to establish that the claimed
amounts of MgO and ZrO2 exhibit unexpected results.
The Appellants also argue that Scott does not anticipate or render
obvious the claimed subject matter because Scott does not disclose that the
second metal M may include erbium, holmium, and thulium. App. Br. 5-6.
Claim 1 recites the following Markush group, “the second metal M is
selected from erbium [Er], holmium [Ho], dysprosium [Dy] and thulium
[Tm8].” A Markush group is a type of genus where the recited species
belong to a recognized class or have a common characteristic. See In re
Harnisch, 631 F.2d 716, 719-20 (CCPA 1980) (“‘Markush’ was the name of

8 The Appellants incorrectly identify thulium as “Tl.” See, e.g., App. Br. 5-6.
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an applicant for patent . . . who happened to use in a claim a type of
definition of a genus or subgenus by enumeration of species . . . .”); In re
Ziegler, 347 F.2d 642, 650 (CCPA 1965) (referring to “species-Markush
genus”). Scott discloses a species with the claimed Markush group, i.e.,
dysprosium. It is well settled that a single prior art species within a claimed
genus anticipates the genus. Atlas Powder Co. v. IRECO Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999). Thus, Scott anticipates the recited Markush
group.
The Appellants have not shown that the Examiner reversibly erred in
rejecting claim 1 under 35 U.S.C. § 102(e) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Scott.
The Appellants do not argue the patentability of dependent claims 2-6
separately. Therefore, the Appellants have likewise failed to show that the
Examiner reversibly erred in rejecting claims 2-6 under 35 U.S.C. § 102(e)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Scott.
2. Tiedt and Scott
The Examiner found that Tiedt discloses a sintered polycrystalline
alumina body for use in high intensity discharge lamps similar to the lamps
of the Appellants and Scott. The Examiner found that Tiedt discloses that
the alumina material includes dopants MgO in an amount of 100-800 ppm,
ZrO2 in an amount of 200-1200 ppm, and Y2O3 in an amount of 10-300 ppm.
The Examiner found that Tiedt limits the amount of MgO to 800 ppm to
prevent the formation of secondary phases and uses ZrO2 in amounts greater
than 200 ppm to improve resistance but limits the amount of ZrO2 to 800
ppm to prevent undesired grain growth. Tiedt 3:66-4:17. The Examiner
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found that Tiedt does not teach that Dy2O3 may be used as a dopant. Ans. 3-
4.
The Examiner found that Scott teaches a polycrystalline alumina body
wherein Dy2O3 and Y2O3 may be substituted for one another. Scott 4:29-47.
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art to substitute Dy2O3 for Y2O3 in the sintered polycrystalline
alumina body of Tiedt since Scott teaches that Dy2O3 and Y2O3 are
equivalents. Ans. 4.
The Appellants argue that the teachings of Tiedt and Scott are in
conflict, and one of ordinary skill in the art would not combine them in the
manner suggested by the Examiner. Specifically, the Appellants argue that
Tiedt discloses that the upper limit for MgO is 800 ppm whereas Scott
discloses that the upper limit for MgO is 1500 ppm, and Tiedt requires ZrO2
but Scott teaches that ZrO2 is optional. App. Br. 9-10.
We disagree with the Appellants that the teachings of Tiedt and Scott
are in conflict with one another. Tiedt and Scott both disclose alumina
bodies for use in high-pressure sodium lamps comprising several common
dopants, i.e., MgO, ZrO2, and Y2O3, in amounts that overlap. Scott 3:5-8,
4:29-41; Tiedt 1:31-36, 2:30-43.
The Examiner relied on Scott to establish that one of ordinary skill in
the art would have known that Y2O3 and Dy2O3 are equivalent dopants in the
disclosed alumina bodies. See In re Fout, 675 F.2d 297, 301 (CCPA 1982)
(“Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.”). The Appellants have not
pointed to any error in this finding. Rather, the Appellants argue that neither
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Tiedt nor Scott disclose the remaining metals in the Markush group, i.e.,
erbium, holmium, and thulium. App. Br. 10.
It is immaterial that Tiedt and Scott do not disclose all of the metals
recited in the claimed Markush group. As explained above, Scott discloses a
single prior art species, i.e., dysprosium, within the claimed genus, and thus,
anticipates the entire genus. Atlas Powder, 190 F.3d at 1346.
The Appellants have not shown that the Examiner reversibly erred in
rejecting claim 1 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Tiedt and Scott.
The Appellants do not argue the patentability of dependent claims 2-6
separately. Therefore, the Appellants have likewise failed to show that the
Examiner reversibly erred in rejecting claims 2-6 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Tiedt and Scott.
F. DECISION
The rejection of claims 1-6 under 35 U.S.C. § 102(e) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Scott is
affirmed.
The rejection of claims 1-6 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Tiedt and Scott is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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